Quantum Corp. v. Rodime, PLC, 94-1296

Decision Date22 September 1995
Docket NumberNo. 94-1296,94-1296
Citation65 F.3d 1577,36 USPQ2d 1162
PartiesQUANTUM CORPORATION, Plaintiff-Appellee, v. RODIME, PLC, Defendant-Appellant.
CourtU.S. Court of Appeals — Federal Circuit

John F. Lynch, Attorney, Arnold, White & Durkee, Houston, TX, argued for plaintiff-appellee. With him on the brief were Richard L. Stanley, J. Mike Amerson, and Gary J. Fischman; David B. Harrison, Quantum Corporation, Milpitas, CA, and Terence M. Fruth, Fruth and Anthony, PA., Minneapolis, MN, of counsel.

Margaret F. Pfeiffer, Attorney, Sullivan and Cromwell, Washington, DC, argued for defendant-appellant; Robert A. Sacks, Sullivan and Cromwell, Washington, DC, and John C. Altmiller, Kenyon and Kenyon, Washington, DC, of counsel.

Before PLAGER, LOURIE, and RADER, Circuit Judges.

PLAGER, Circuit Judge.

The question in this declaratory judgment action is whether amendments made during a prior reexamination proceeding impermissibly broadened the scope of the patent claims at issue in violation of 35 U.S.C. Sec. 305 (1988), 1 and, if so, the legal effect thereof. Defendant patentee Rodime PLC (Rodime) appeals the decision of the United States District Court for the District of Minnesota, Civil Action No. 4-93-214. In its decision, the district court granted Quantum Corporation's (Quantum) motion for summary judgment that Claims 4, 6, 7, 9, 14 and 19-27 of U.S. Patent No. B1 4,638,383 (the reexamined '383 patent) are invalid because they were impermissibly broadened during reexamination. We affirm.

I. BACKGROUND
A.

Rodime is the owner of the reexamined '383 patent, which issued on November 29, 1988. The reexamined '383 patent is directed to a micro hard-disk drive system (3.5 inch drive) suitable for use in portable computers with performance parameters comparable to those available in 5.25 inch disk drive systems. Quantum, the plaintiff in this declaratory judgment action, is the manufacturer of disk drives which, Rodime alleges in its counterclaim, infringe its patent.

The claim limitation at issue in this appeal relates to the storage capability of the hard-disk. The storage capability of a hard-disk is a function of the track density; the greater the track density, the more data that can be stored in a given area of the disk. Track density may be defined in terms of "tracks per inch" (tpi), calculated based on the number of concentric tracks present within an inch along the radius of the hard-disk.

On November 19, 1985, James G. McGinley and Roderick M. Urquhart, two engineers at Rodime, filed a patent application for the invention described above. Claim 1 of this application recited, inter alia, a track density of "approximately 600" tpi. The examiner, in a first office action, rejected all the claims as obvious under 35 U.S.C. Sec. 103. With respect to the track density limitation in Claim 1, the examiner stated:

The art described in the preceding paragraph [regarding 5.25 inch disks] demonstrates that such a density is within the state of the art. Such a density would seemingly be achievable on a [3.5 inch] disk in the same manner by which it was achieved on a larger disk. Consequently it would seem that the subject matter of claim 1--which is seemingly quite general--should not be considered patentable.

In a response dated May 23, 1986, applicants cancelled the original claims and inserted new claims some of which recited a track density of "at least 600" tpi. Although applicants had replaced "approximately" with "at least" in the track density limitation of these new claims, they made no reference to this in their response, but instead focused on the difference between the size of their disks (3.5 inch) and those in the prior art (5.25 inch) as a basis for overcoming the examiner's rejection. The examiner subsequently allowed these new claims, and the patent issued on January 20, 1987, as U.S. Patent No. 4,638,383 (the original '383 patent). Claims 4, 6, 7, 9, and 14 of the original '383 patent all recited a track density of "at least 600 concentric tracks per inch."

On September 28, 1987, Rodime, the owner of the original '383 patent pursuant to an assignment from the inventors, requested reexamination of its patent. Finding a substantial new question of patentability, see 35 U.S.C. Sec. 303, the United States Patent and Trademark Office (PTO) granted Rodime's request for reexamination of all 16 claims in the original '383 patent. In an office action dated April 19, 1988, the examiner rejected all but two of the original claims. Rodime responded by cancelling certain claims, amending others, and adding dependent Claims 17-31. With respect to the claims at issue in this appeal, Rodime made substantial amendments including changing the track density limitation from "at least 600" tpi to "at least approximately 600" tpi. These claims were allowed, as amended, and the '383 reexamined patent issued on November 29, 1988, as U.S. Patent No. B1 4,638,383. As issued, independent Claims 4, 6, 7, 9, and 14 of the reexamined '383 patent all recite a track density of "at least approximately 600" tpi, and the newly added dependent claims which are at issue in this appeal, i.e. Claims 19-27, either explicitly contain this limitation or incorporate it through their dependency. 2

B.

Quantum filed the present action in the United States District Court for the District of Minnesota on February 26, 1993, seeking a declaration that the reexamined '383 patent is invalid, unenforceable and not infringed. Rodime subsequently filed an answer and a counterclaim for infringement. On February 22, 1994, Quantum filed a motion for summary judgment that Claims 4, 6, 7, 9, 14, and 19-27 of the reexamined '383 patent are invalid under 35 U.S.C. Sec. 305 for being impermissibly broadened by Rodime during reexamination. According to Quantum, Rodime's amendment during reexamination of the track density limitation from "at least 600" tpi to "at least approximately 600" tpi broadened the scope of the claims to cover certain disk drives with approximately but less than 600 tpi that were not covered by the original '383 patent claims, and therefore these claims are invalid under 35 U.S.C. Sec. 305.

The district court, in an order dated April 11, 1994, granted Quantum's motion for summary judgment. The court, after examining the claims, specification, and prosecution history, concluded that the addition of the word "approximately" to the track density limitation during reexamination was not a mere clarification, as Rodime argued, but was instead a substantive change that expanded the scope of the claims at issue in violation of 35 U.S.C. Sec. 305, and that no reasonable juror could have found otherwise. In support, the court relied on the difference in the ordinary meaning of the disputed claim limitations: a track density of "at least 600 tpi" indicates densities starting at, but greater than 600 tpi, whereas the addition of "approximately" in the track density limitation of the reexamined '383 patent modifies the 600 tpi value, thereby eroding the "not less than" meaning of "at least." Based on these definitions, it followed, according to the court, that the claims had been broadened during reexamination since the reexamined '383 patent covered devices with track densities less than 600 tpi that were not covered by the original '383 patent. The court then concluded, without analysis, that the improperly broadened claims were invalid.

Since the district court's ruling disposed of all the claims which Rodime in its counterclaim had alleged Quantum to infringe, the district court, on April 26, 1994, ordered that final judgment be entered under Fed.R.Civ.P. 58 in favor of Quantum for a declaratory judgment of nonliability and against Rodime for its counterclaim of infringement of the reexamined '383 patent. This appeal followed.

II. DISCUSSION

There are two issues in this case: first, whether Rodime broadened the scope of the claims at issue during reexamination in violation of 35 U.S.C. Sec. 305 by changing the track density limitation from "at least 600 tpi" to "at least approximately 600 tpi," and, second, assuming the claims were impermissibly broadened, the legal effect of violating section 305. We review the district court's grant of summary judgment in favor of Quantum on these issues--that the claims were broadened and are therefore invalid--to determine whether any genuine issues of material fact are in dispute, and whether any errors of law were made. London v. Carson Pirie Scott & Co., 946 F.2d 1534, 1537, 20 USPQ2d 1456, 1458 (Fed.Cir.1991).

A.

35 U.S.C. Sec. 305 states, in relevant part, that "[n]o proposed amended or new claim enlarging the scope of a claim of the patent will be permitted in a reexamination proceeding." An amended or new claim has been enlarged if it includes within its scope any subject matter that would not have infringed the original patent. In re Freeman, 30 F.3d 1459, 1464, 31 USPQ2d 1444, 1447 (Fed.Cir.1994). "A claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects." Id. (quoting Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n. 2, 4 USPQ2d 1450, 1453 n. 2 (Fed.Cir.1987)). Accordingly, the claims at issue have been improperly broadened in violation of 35 U.S.C. Sec. 305 if the track density limitation in the claims of the reexamined '383 patent--"at least approximately 600 tpi"--is broader than the track density limitation in the claims of the original '383 patent--"at least 600 tpi."

Whether claims have been enlarged is a matter of claim construction, a question of law subject to complete and independent review on appeal. Id. at 1464, 31 USPQ2d at 1447. When construing the meaning of disputed terms in a claim, we look to the claims, specification and prosecution history. Carroll Touch, Inc. v. Electro Mechanical Sys., Inc., 15...

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